Inter Partes Review (IPR) was introduced by the America Invents Act (AIA) as an alternative to post-grant review, replacing inter partes reexamination. It becomes available only after the post-grant review period has ended.
IPR is a trial proceeding conducted by the U.S. Patent Trials and Appeals Board (PTAB) to assess the patentability of one or more claims in a patent. It is limited to challenges based on prior art consisting of patents or printed publications, and only on grounds under 35 U.S.C. § 102 or 103. The process begins when a third party, who is not the patent holder, files a petition, which can be done no earlier than 9 months after the patent’s issuance or reissue, or if a post-grant review has been initiated, after its conclusion. The patent owner may respond with a preliminary reply to the petition.
An IPR is initiated if the petitioner shows a reasonable likelihood of succeeding in challenging at least one claim. If instituted and not dismissed, the PTAB will issue a final decision within one year, which can be extended for up to six months for good cause. The IPR procedure, effective from September 16, 2012, applies to any patent granted before, on, or after that date.
Post-Grant Review (PGR) is a trial proceeding conducted by the U.S. Patent Trials and Appeals Board to assess the patentability of one or more claims in a patent on any grounds that could be raised under § 282(b)(2) or (3). The process begins when a third party files a petition within 9 months of the patent’s grant or reissue issuance. The patent holder can submit a preliminary response to the petition.
A post-grant review is initiated if it is shown that there is a greater likelihood than not that at least one challenged claim is unpatentable. If the review proceeds and is not dismissed, the PTAB will issue a final decision within one year, extendable by up to six months for good cause. The PGR procedure, effective from September 16, 2012, applies to patents issued from applications subject to the first-inventor-to-file provisions of the AIA.
The Transitional Program for Covered Business Method (TPCBM) Patents is a trial process at the Patent Trial and Appeal Board (PTAB) designed to assess the patentability of claims in a covered business method patent. TPCBM proceedings follow the post-grant review standards and procedures, with a few exceptions. For example, only a limited subset of prior art can be used to support a petition for first-to-invent patents. Additionally, a petition for TPCBM review can only be filed by someone who has been sued for infringement or charged with infringement under the patent. The TPCBM review process began on September 16, 2012, and is limited to covered business method patents. The program is set to end for new petitions on September 16, 2020.
A derivation proceeding is a trial process conducted by the Patent Trial and Appeal Board (PTAB) to determine whether an inventor listed in an earlier application derived the claimed invention from an inventor in the petitioner’s application, and whether the earlier application was filed without proper authorization. Under the first-inventor-to-file provisions, a petition for a derivation proceeding must be filed within one year of the first publication of a claim to an invention that is the same or substantially similar to the claim in the earlier application. The petition must be supported by substantial evidence showing that the invention was derived from an inventor in the petitioner’s application.
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